Trials@uspto.gov
`571-272-7822
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` Paper 15 IPR2014-00678
` Paper 14 IPR2014-00687
` Paper 14 IPR2014-00688
`
`Paper 14 IPR2014-00689
` Date: July 24, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PETROLEUM GEO-SERVICES INC,
`Petitioner,
`
`v.
`
`WESTERNGECO LLC,
`
`Patent Owner.
`
`Cases1
`IPR2014-00678(Patent 6,691,038)
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`
`
`
`
`
`
`
`Before BRYAN F. MOORE, SCOTT A. DANIELS, and BEVERLY M.
`BUNTING, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`1 This Order addresses issues that are the same in all four cases. Therefore, we
`exercise our discretion to issue one Decision to be filed in each case. The parties
`are not authorized to use this style heading for any subsequent papers.
`
`
`571-272-7822
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` Paper 15 IPR2014-00678
` Paper 14 IPR2014-00687
` Paper 14 IPR2014-00688
`
`Paper 14 IPR2014-00689
` Date: July 24, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PETROLEUM GEO-SERVICES INC,
`Petitioner,
`
`v.
`
`WESTERNGECO LLC,
`
`Patent Owner.
`
`Cases1
`IPR2014-00678(Patent 6,691,038)
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`
`
`
`
`
`
`
`Before BRYAN F. MOORE, SCOTT A. DANIELS, and BEVERLY M.
`BUNTING, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`1 This Order addresses issues that are the same in all four cases. Therefore, we
`exercise our discretion to issue one Decision to be filed in each case. The parties
`are not authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2014-00678 (Patent 6,691,038)
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`On July 2, 2014, a conference call was held in the above proceedings
`
`regarding a request via email by Patent Owner for additional discovery. Present on
`
`the call were counsel for and Administrative Patent Judges Bryan Moore and
`
`Beverly Bunting.
`
`Motion for Additional Discovery
`
`Patent Owner requested authorization to file a motion seeking additional
`
`discovery on the issue of whether Petroleum Geophysical AS (PGSAS) is
`
`controlling Petitioner in this proceeding such that it should have been named a real
`
`party in interest. In support of this request, Patent Owner pointed to the fact that
`
`PGSAS is represented by the same firm (and same lawyer) as Petitioner; that the
`
`aforementioned firm requested permission for PGS to use prior litigation materials
`
`in an IPR filing; that PGSAS is a party in the related District Court case; and that
`
`an inventor is a common employee. Patent Owner indicated that it wanted to
`
`make sure that PGSAS is subject to any estoppel that may attach after this case
`
`concludes. Patent Owner suggested that the aforementioned request to use
`
`materials shows PGSAS is controlling, but was unable to point to any fact that
`
`would lead one to conclude that this proceeding is being controlled by PGSAS,
`
`rather Patent Owner pointed to facts that may lead one to suspect that PGSAS is
`
`involved in some way. Petitioner’s counsel opposed the request to file a motion.
`
`The Board took the request under advisement.
`
`2
`
`
`
`IPR2014-00678 (Patent 6,691,038)
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`Additional discovery is permitted in an inter partes review only in the
`
`interests of justice. There must exist more than a “mere possibility” or “mere
`
`allegation that something useful [to the proceeding] will be found.” Garmin v.
`
`Cuozzo, IPR2012-0001, Paper 20 (PTAB Feb. 14, 2013). The party seeking
`
`discovery must come forward with some threshold amount of factual evidence or
`
`reasoning beyond speculation to support its request. Id. Paper 26 (March 5, 2013).
`
`Patent Owner’s request amounts to no more than a “mere allegation that
`
`something useful will be found.” See Garmin, Paper 20, Factor 1. The question is
`
`whether PGSAS is a real party-in-interest. Patent Owner has produced no factual
`
`evidence or support beyond speculation that PGSAS is controlling this proceeding
`
`and thus is a real party-in-interest. See Office Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,759 (Aug. 14, 2013). We are not persuaded that the use of common
`
`counsel or a request to use documents by that counsel, indicates control by
`
`PGSAS. Nor are we persuaded by the existence of a common employee. Patent
`
`Owner did not suggest that the employee had any power to direct the litigation and,
`
`without more, we have no reason to suspect that common employee is controlling
`
`the litigation. The suspicion of Patent Owner’s counsel, without more, is not
`
`enough to persuade us that something useful will result from authorizing the
`
`proposed motion. In the absence of any such showing, the request for
`
`authorization is denied at this time.
`
`Voluntarily Adding PGSAS as a Real Party-in-Interest
`
`It was discussed whether PGSAS could be added as a real party-in-interest
`
`voluntarily by Petitioner to avoid this issue coming up again after the passing of
`
`3
`
`
`
`IPR2014-00678 (Patent 6,691,038)
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`the one year statutory bar. Petitioner asked, without conceding that PGSAS was in
`
`fact a real party-in-interest, whether the PGSAS could be added as a real party-in-
`
`interest without changing the filing date. Patent Owner stated that an incorrect real
`
`party-in-interest was a statutory defect that could not be corrected.
`
`We note that the patent rules provide for the correction of “clerical or
`
`typographical” mistakes in a petition for inter partes review while maintaining the
`
`original filing date. 37 C.F.R. § 42.104(c); see also 37 C.F.R. § 42.106(b)
`
`(allowing for correction of an incomplete petition). Thus, the Board has allowed
`
`for the correction of certain papers filed in inter partes review proceedings to
`
`address inadvertent mistakes. See, e.g., IPR2013-00063, Paper 21 (PTAB Jan. 16,
`
`2013). The rules contemplate, however, that not all mistakes can be corrected. See
`
`e.g., Final Rules of Practice at 48699 (“[t]here is no provision allowing for the
`
`correction of a mistake that is not clerical or typographical in nature without a
`
`change in filing date.”).
`
`Failure to name the proper real party-in-interest in this case does not appear
`
`to be a mere typographical error, clerical error or unintentional mistake, for
`
`example, a typographic mistake or inadvertent omission, but rather a substantive
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`deficiency requiring a new filing date. See IPR2013-00609, Paper 15 at 16-17
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`(PTAB March 20, 2013). Without more, we find, at this time, that to allow
`
`correction of the real party-in-interest in this case is not contemplated by the patent
`
`rules allowing for correction of typographical or clerical mistakes. See, e.g., 37
`
`C.F.R § 42.104(c) or 37 C.F.R. § 42.106(b). Therefore, we will not allow such a
`
`4
`
`
`
`IPR2014-00678 (Patent 6,691,038)
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`correction at this time without changing the filing date. We do not now decide
`
`whether such a correction could be made without also refiling the petition.2
`
`
`
`It is
`
`ORDERED that Patent Owner’s request for authorization to file a motion for
`
`additional discovery under 37 C.F.R. 42.51(b)(2) is denied.
`
`
`
`
`
`
`
`2 We also note that Petitioner offered, in an email to the Board Staff, an agreement
`regarding estoppel and any challenge to the real party-in-interest in the IPR. We
`take no position as to that offer.
`
`5
`
`
`
`IPR2014-00678 (Patent 6,691,038)
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`For PETITIONER:
`
`Jessamyn Berniker
`Christopher Suarez
`Williams & Connolly, LLP
`Jberniker@wc.com
`Csuarez@wc.com
`
`
`
`For PATENT OWNER:
`
`
`
`
`
`
`
`
`Scott A. McKeown
`Christopher A. Bullard
`OBLON, SPIVAK, McCLELLAND,
`MAIER & NEUSTADT, L.L.P.
`CPdocketMcKeown@oblon.com
`CPdocketBullard@oblon.com
`
`6
`
`
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